Merctec LLC v. Johnson & Johnson and Cordis

This is one of the early patent decisions of 2012 by CAFC, delivered on 01-03-2012. In this case CAFC affirmed the award of Attorney fees ($3,873,865.01) under Sec 285 upon finding the case as “Exceptional”. CAFC also affirmed the District Court’s construction of the word “bonded” in Patent Numbers – US 7,128,753 and US 7,217,290.

Merctec LLC holds two patents (Patents-in-suit) directed towards “Surgical Devices”. It sued Cordis and Johnson & Johnson collectively for Infringement. The District Court construed the word “bonded” by considering the statements made by the inventor during the Prosecution. The inventor specifically stated that “the bonding material as mentioned in the claims is meant to include a non-flowing, non-adherent and heat bondable material which is bonded to an implant by application of heat”. The district court construed the claims with reference to the Prosecution History and decided in favor of Johnson & Johnson for non-infringement. Upon finding non-infringement, the District Court also found the allegations put forth by the Plaintiff’s as baseless and non-persuasive and awarded $4 Million as attorney and expert fees. Specifically the District Court finding of Litigation Misconduct by Merctec LLC reveals that it:

1.      Misrepresented both law and claim construction ultimately adopted by the court; and

2.      Failed to meet minimal standard of reliability

The CAFC appreciated the finding of Litigation Misconduct by the District Court and affirmed the award of attorney fees.

Source: http://www.ipo.org/AM/Template.cfm?Section=Federal_Circuit_Opinions&template=/CM/ContentDisplay.cfm&ContentID=31944

Strategies for Pre and Post-Grant Oppositions in US and Europe

During the course of my work as a legal intern at Lowe Hauptman Ham Brenner LLP Alexandria VA, I was instructed to assist in preparing a presentation on the title “Strategies for coordinating pre and post grant oppositions in the United States with European Practices” for the Global IP conference in New Delhi, India. Unfortunately the visit to India was cancelled due to the time constraints. I thought the presentation is worthy of sharing! Hope this helps!

Here is the slide-share link http://www.slideshare.net/sriharshavasireddy/pre-and-post-grant-strategies-in-us-and-europe

Extended Pilot Program by USPTO

            The United States Patent and Trademarks Office introduced a new Pilot Program (Extended Missing Parts Pilot Program) after considering various written comments by the public. This new program allows a non-provisional applicant to seek for a 12 month extension to pay the search fee, examination fee, any excess claim fees and the surcharges if any.

Effective Date – 16^th December 2011 to 31^st December 2012.

Eligibility Criteria -

1. The applicant must submit a certification and request to participate.
2. The application must be an original non-provisional utility or plant application.
3. The non-provisional application must claim the direct benefit of a prior provisional application filed within 12 months.
4. The applicant must not have filed a non-publication request.

Benefits -

This new program facilitates the applicant to commercialize the product for a long duration, he can also find out some low cost possibilities to protect his invention during this extended period. It benefits the public by adding publications to the body of prior art. Finally it reduces the workload of the USPTO by removing the non-provisional applications for which the applicant later decides not to pursue examination.

Highlights of Patent Reform Bill or America Invents Act (AIA), 2011

The Patent Reform Bill a.k.a. America Invents Act (AIA) brought significant changes to the American Patent System. The much needed bill was passed by the senate a week ago and officially signed by the President Mr. Barack Obama on 16^th September 2011.

            The objective of this bill as reiterated by the President is to improve the quality filing; to reduce the patent litigation cost; to bring international harmonization; to generate more revenue for USPTO and most importantly to increase the jobs in the patent industry.

            This amendment has brought some significant changes in terms of First to file system, Novelty, Changes in the patent fees structure, Prior Art, Prior user rights etc. The effective date of this law is fairly complicated as different changes would be brought into effect on different dates. The changes that are going to come into immediate effect are:

o   Patent fees increased (15%) from September 26^th of 2011

o   Tech Strategies are considered as a prior art.

o   Human organism patents prohibited

o   Filing deadline for patent term extension clarified

o   Virtual false making provisions changed

o   Changed limitations for practitioners misconduct

o   Establishment of Micro-entity fee discount (Less than 50 employees)

o   End of Best Mode defense

The United States is being transformed into “first to file system” from March 16^th, 2013. So Patent Office is expecting a whole bunch of applications before this date by following “first to invent” system. I will come up with the other significant changes soon.

CIPLA seeks for Compulsory License

Recently CIPLA filed an application before Indian Patent Office seeking for the grant of Compulsory License against Merck’s Anti- HIV Drug, Isentress. CIPLA filed this application of Compulsory License on the ground that “Isentress is not available in the market at reasonable and affordable price”.

It is known that the Act under Sec 84 provided certain grounds for granting Compulsory License, which principally includes the ground “Not available to public at Reasonable Price”.

The term “Reasonably affordable price” must be construed according to the present circumstances prevailing in India”. The price fixed by the Merck & Co. is $7 (USD), which is not “reasonable” to the public in India.

Hence the term “Reasonably affordable price” must be given utmost importance while disposing this application. Till now the patent offices in India have never laid down any boundaries to the pricing of drugs, hope they will at least do it now.  

Schering Corp (Merck & Co) Vs Sun Pharma

A patent infringement complaint was filed by Schering Corp a subsidiary of a Multi national pharma company Merck & Co against Sun Pharma Indian Pharma Company last week in the district court for New Jersey.

This complaint was filed in relation to the generic version of the most widely used brain cancer drug Temodar. Sun Pharma filed an Abbreviated New Drug Application (ANDA) to launch a Generic version of Temodar in the US Market.

Temodar, which Merck acquired through the acquisition of Schering-Plough last year, has annual global sales of about $1 billion. It has sales of about $380 million only in the US market.

Interestingly Merck & Co has the patent protection for Temodar in US till 11^th August 2013. The world's leading generic company, Israel's Teva Pharmaceutical-owned Barr Laboratories, had succeeded early this year in invalidating patent rights of the same drug so Sun Pharma assuming the significance of the above decision filed an ANDA.

The patent litigations were very common in generic drug business in the US. According to the US rules for generic drug launches, the generic company which files a patent-infringing ANDA has to be sued by the innovator within 45 days to prevent the FDA from approving the generic for the next 30 months. In most such cases, the companies settle the litigation out of court.

YouTube Vs Spanish TV Channel

YouTube is a one-year old internet sensation which has a huge collection of videos in it. A suit was filed against YouTube by a local Spanish TV channel (Telecinco) alleging that YouTube is violating its intellectual property rights by broadcasting videos that belonged to it.

The court in its provisional decision ordered the YouTube to suspend the broadcasting of the videos belonging to that Spanish TV channel. But in its final decision the court ruled against the Spanish TV channel saying that “YouTube cannot be held responsible for screening images uploaded on its site.”

The court in its decision made the following things very clear:

• YouTube is not a supplier of content and therefore has no obligation to control ex-ante the illegality of what is on its site

• YouTube just provides a free tool known as Content ID "designed to prevent copyright abuses and give owners control over their content" which is used by more than 1,000 media companies

• Its only obligation is to cooperate with the holders of the rights in order to immediately withdraw the content once the infraction is identified

But it is "physically impossible to control all the videos that are made available to users, as there were in fact more than 500 million.

Dabangg’s Controversy

Emami Ltd’s has served a Legal Notice to the producer of Dabangg for using ZANDU BALM in the song “Munni Badnaam Hui” with out the permission. The song line goes like “Main Zandu balm hui, darling tere liye”

In view of this a legal notice was sent to Arbaaz Khan, his partner and wife Malaika Arora (Munni in the movie), Shri Ashtavinayak Cinemas Ltd, and director Abhinav Kashyap on 17^th September 2010 claiming that they are the sole copy right holders of the name “Zandu Balm”.

The Notice points out “My clients are in the business of producing and marketing various ayurvedic and other medicines including a popular product known as Zandu balm, which is a very common word used by the people, since it is commonly used for pain and related complaints.” The notice adds, “In the song, the name Zandu balm has been used continuously at various places. By using the brand name in the song, you have not only violated the copyright of my clients, but you have also made an attempt to defame the reputation of my clients and the product manufactured by them.”

Now Emami Ltd’s has asked the producers either to withdraw the song or delete the brand name from it. Till now the any reaction from Dabangg’s producers on this case is not stated.

The Youtube Link for the Video song:

Munni Badanaam Hui Video Song

Pfizer Sues Actavis

Pfizer Inc., the world’s largest drug manufacturing company, sued Actavis Group (an Iceland based Company) for infringement of Lipitor patent. Pfizer demanded the judge to block sales of a generic version of the cholesterol drug Lipitor until the patent expires. The expiry date of the aforesaid infringed patent is till 2017.

New York based Pfizer contends that Actavis has applied to the U.S. Food and Drug Administration to make copies of the drug in violation of the patent filed in 1999.

According to a complaint filed today in federal court in Wilmington, Delaware it can be inferred that “Plaintiffs will be irreparably harmed” if Actavis markets its product before the patent-protection expires, Pfizer lawyers demanded legal fees and expenses in the complaint.

Lipitor is the best-selling medicine worldwide, with sales of $11.4 billion in 2009. Pfizer said that on July 6 it has received approval from the European Commission for a new chewable form of Lipitor for children over age 10.

Source: www.bloomberg.com

Trademark Journal on Every Monday

The Controller General of Patents, Trademarks and Designs, in a public notice dated 30-08-2010 announced that the Trademarks Journal will be published on all Mondays starting from 06-09-2010.

Hope this time the Patent Office will be successful in keeping its promise, if IPO does so it will be really helpful for the people who will be waiting for the journal for days together.

Interestingly in that Public Notice they have highlighted All Mondays, so I think they are going to publish it even on those Mondays that comes as Holidays.

Source: http://www.ipindia.nic.in/iponew/public_notice_30August2010.pdf